Broccoli 2nd Referral Concerns Product-by-Process Claims

Previously, questions were referred to the European Patent Office's Enlarged Board of Appeal (EBA) concerning methods of producing brassicas with elevated levels of anticarinogenic glucosinolates (the so-called 'broccoli case'; EP1069819 - T 83/05). The questions were joined with similar questions from the so-called 'tomato case' (EP1211926 – T1242/06).

It was held by the EBA in this first referral that a non-microbiological process for the production of plants which contains the step of sexually crossing the whole genome of plants and subsequently selecting plants is in principle excluded from patentability because it is 'essentially biological'. See G02/07 and G1/08.

Product claims, in particular product-by-process claims, were not at issue in this first referral.

Following the outcome of the referral, new claim sets were filed by the Proprietor of the 'tomato case'. These claim sets did not have any method claims but did have product claims directed to the tomato fruit. This resulted in a second referral to the EPO – which is pending as G2/12.

In addition, new claim sets were also filed by the proprietor of the 'broccoli case'. These claim sets did not have any method claims but did have product-by-process claims directed to the plant as such, an edible portion and to the seed of the plant wherein the process to produce the product uses an 'essentially biological' process. Under established European case law, product-by-process claims are not limited to the product produced by the relevant process but also extend to products which are structurally identical but which are produced by a different process. These new claim sets have lead to the following questions being referred to the EBA:

Can the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts?

In particular: (a) Is a product-by-process claim directed to plants or plant material other than a plant variety allowable if its process features define an essentially biological process for the production of plants? (b) Is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?

Is it of relevance in the context of questions 1. and 2. that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC?

If a claim directed to plants or plant material other than a plant variety is considered not allowable because the plant product claim encompasses the generation of the claimed product by means of a process excluded from patentability under Article 53(b) EPC, it is possible to waive the protection for such generation by 'disclaiming' the excluded process?

Questions 1., 2.(b) and 3. are the same as those of the second referral in the 'tomato case'. Question 1. has been modified to additionally refer to 'plant parts' and question 2.(b) has been added to encompass 'product-by-process claims'. To determine if disclaimers are allowable for product-by-process claims, question 4. has been added.

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